PTAB

IPR2022-01051

Dialpad Inc v. Flypsi Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Providing Telephone Service
  • Brief Description: The ’770 patent discloses a method for providing telephone service by associating a secondary telephone number with a primary number assigned to a handset. The method uses a data channel (e.g., IP channel) to transmit call handling information between the handset and a switch, and a separate voice channel (e.g., CDMA or GSM) to transmit the associated voice call.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over Backhaus in view of Logan.

  • Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Logan (Application # 2010/0128857).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Backhaus taught the core architecture of a Second Line Service (SLS) that associates secondary and primary numbers on a server, uses a "relationship number" as a bridge number to connect calls via a switch, and sends pre-call information to the user's handset. Logan allegedly supplied the missing element of user-configurable call processing rules (e.g., location-based, time-based) that are acquired from the handset over a data channel and stored on a server to control call handling. The combination, therefore, disclosed all limitations of independent claim 1.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Logan with Backhaus to enhance Backhaus's basic SLS system. Petitioner asserted that adding Logan’s customizable user-preference features was a predictable improvement, offering users greater flexibility in managing calls to their virtual number. The similar client-server architectures of both references would have made the integration of Logan's software-based rules into Backhaus's system straightforward.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying Logan's known call-processing algorithms to Backhaus's analogous server infrastructure. This was presented as a simple addition of software logic to yield the predictable result of a more functional virtual number service.

Ground 2: Claims 1-6 are obvious over Backhaus in view of Logan and Burg.

  • Prior Art Relied Upon: Backhaus (Application # 2013/0295892), Logan (Application # 2010/0128857), and Burg (European Application # EP1119168).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated the combination of Backhaus and Logan from Ground 1 and added Burg to further support the obviousness of specific claim limitations. Petitioner argued that Burg explicitly taught using switches to make, receive, and connect calls between a user device and a call answering system, reinforcing the argument that implementing the switching functionality in Backhaus's SLS platform would have been obvious. For dependent claim 6, which requires a CDMA or GSM voice channel, Petitioner asserted that Burg expressly disclosed using the GSM standard to carry voice in a circuit-switched mode, making its application to the voice channel in Backhaus's system obvious.
    • Motivation to Combine: A POSITA would be motivated to incorporate Burg’s teachings because Backhaus expressly mentioned using known telecommunication techniques, and Burg detailed the conventional use of switches for call routing. The systems were analogous, as both involved intercepting calls and using bridge numbers. Therefore, applying Burg's established switching methods to implement Backhaus's system was a natural design choice. Further, since GSM was a widely known standard for voice channels, a POSITA would find it obvious to use it for the voice channel in the combined system.
    • Expectation of Success: Success was expected because the combination merely applied well-understood, conventional switching technology (from Burg) to the known virtual number system architecture of Backhaus and Logan. Petitioner contended this was a combination of familiar elements according to known methods to yield predictable results.

4. Key Claim Construction Positions

  • Petitioner proposed that the term "pre-call information" should be construed to mean "information received by a handset before or during a notification for a call." This construction was based on the patent's description that the information may be received "before or during the call ringing on the handset." This timing aspect was central to arguments that information sent over a data channel, as taught by the prior art, met this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The core reasons provided were: (1) the trial date in the parallel district court litigation was uncertain and likely to be postponed; (2) the district court had invested minimal effort in the invalidity issues; (3) Petitioner filed a stipulation agreeing not to pursue in district court any grounds raised or that reasonably could have been raised in the inter partes review (IPR); and (4) the petition relied on prior art and arguments not previously considered by the USPTO during prosecution, strengthening the case for institution to promote the integrity of the patent system.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-6 of the ’770 patent as unpatentable.